India: Delhi High Court on Design-Trademark overlap

January 10, 2019
understanding and significance of Intellectual Property Rights

The advancement of both the understanding and significance of Intellectual Property Rights has led to a confusing era of overlapping IP protections and privileges. These overlaps have led to various debates on enhanced protection of IP under the various statutes protecting them. The intent of Order II Rule 2 of the Code of Civil Procedure (CPC) is important in understanding whether a multiplicity of suits can exist where the cause of action is distinct.

Recently, the Delhi High Court in the case of Greenlight Planet India Pvt Ltd. v. Gee Lighting Technology[1], held that passing off under the Design Act, 2000 is different from the suit of passing off for Trademarks, domain name and trade dress. Accordingly, the Court stated that Greenlight Planet India Pvt. Ltd, is entitled to institute a different suit.

Brief Facts

  • In this case, Gee Lighting Technology (hereinafter referred to as the ‘Defendant’) filed an application under Order 7 Rule 11 (d) of the CPC for the rejection of plaint instituted by Greenlight Planet India Pvt Ltd. (hereinafter referred to as the Plaintiff) .
  • The Counsel for the Defendant submitted that the current plaint was liable to be rejected as the present suit for permanent injunction restraining passing off is barred under Order II Rule 2 of the CPC[2].
  • Further, the Defendant also pointed out the fact that the previous suit was filed by Plaintiff for infringement of design and the Plaintiff did not claim for any relief with respect to passing off of the goods under GEE-LITE domain name and trade name.
  • Furthermore, the Defendant stated that Plaintiff has no right to initiate the proceedings and moreover did not seek any leave from the Court. The said act of the Plaintiff went against the basic intention of Order II Rule 2 i.e. to avoid multiplicity of litigations between the same parties.

One of the intrinsic issue that fell for consideration before the Court was whether the Plaintiff can institute different suits in passing off under the Designs Act, 2000?

The Plaintiff submitted that passing off is a continuous cause of action, thus, the Plaintiff has a right to initiate such proceeding against the Defendant till the time passing off continues.

The Defendant in their contention submitted the statute provides power to a certain act and prescribes a method that has to be followed, and states that it inevitably prohibits doing a certain act in any manner than what is prescribed. While relying upon catena of cases, the Defendant pointed out that the Plaintiff has relinquished to sue the Defendant for the infringement and passing off on the said trademark, domain name and trade name.

Courts decision

  • The Court held that Order II Rule 2 of the CPC prevents multiplicity of suits in order to protect the person from being vexed twice for the same offence. However, the cause of action under the Designs Act is distinct from a suit of passing off, of a trade mark, domain name and trade name.
  • Therefore, the Plaintiff can institute a different suit for passing off the trade mark, domain name and trade name. Also, there is no requirement to take a leave of the Court to file a different suit in this regard.

[1] CS(COMM) 290/2018

[2] Order II Rule 2 CPC bars a subsequent suit relating to the same cause of action. It is based on the principle that a person shall not be vexed twice for the same cause of action.

For more information please contact us at :